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USPTO Detroit plan may be bigger than you think

The U.S. Patent and Trademark Office will offer Detroit and its legal community much more than supplemental research space, or conference rooms to meet with patent examiners, when it opens in July.

You've probably read here by now about USPTO's five-year lease to occupy 31,000 square feet of the Stroh Brewery headquarters building at 300 N. River Place, where the Elijah J. McCoy United States Patent and Trademark Office is now set to open July 16.

But since then, the fee-funded federal agency has already begun remodeling work in the former Parke-Davis Laboratories space at River Place. It also quietly began listing jobs and reviewing prospective patent examiners and administrative patent judges last month.

Also, the government is hosting a series of four "USPTO Patent Examiners Open House" information sessions next Saturday, March 24 at the nearby Roberts Riverwalk Hotel in Detroit for any U.S. citizen with an engineering or science degree, and IP background, who can "live or...relocate to the Detroit area."

The USPTO in Washington reports to Crain's this week that it is "seeing really strong indicators" of local job interest and applicant skill sets and has coordinated some meetings with the local IP legal community, as well as Southeast Michigan universities and entrepreneur organizations, for help with talent and resources.

The patent examiner job openings (at salaries of $69,899 to $90,866) are no real surprise. Neither is the focus on mechanical and electrical engineering expertise in Detroit. Somewhat more interesting is the need for up to six administrative patent judges (at salaries of $134,498 to $165,300) to serve in Detroit as part of the USPTO's Board of Patent Appeals and Interferences.

Jim Stevens, immediate past president of the Michigan Intellectual Property Law Association and partner at Troy-based Reising Ethington PC, took part in one recent meeting with USPTO staff in Detroit and said the judges may reflect a new market for post-patent review proceedings under the Leahy-Smith America Invents Act, enacted last year.

"Before the new act, there wasn't much post-grant review of a patent. Instead, there was a procedure for reissue, where a third party could bring up a question and have an official just review privately whether a previously issued patent decision should be revisited," he said.

"Now this opposition and other proceedings put into place creates a more even and open battlefield between the patent opposer and someone seeking patent protection."

The Board of Patent Appeals and Interferences is expected to do less work over time in "interferences," or challenges to a patent application by a third party who claims to be first inventor, and shoulder more of the formal opposition processes in the act.

Oppositions can include challenges to a pending patent request based on failure to disclose a previous invention, or a claim that the patent is too broad and amounts to an attempt by one business to lock its competitors out of a market.

The act provides up to six avenues of patent opposition, some of which are not fully developed. But local attorneys expect many challenges will go through a review by the original patent examiner with aid from a supervisory patent examiner, or SPE. A new decision from the examiner would follow, and either side may appeal or challenge that ruling to the Board of Patent Appeals.

The agency is also considering a floorplan design at River Place to include a public access area, where visitors in Detroit could use computers to review government records for "prior art," or past patents related to a proposed invention that could affect the inventor's legal standing to obtain a new one.

There is also talk of "hoteling," or modest office space devoted to employees who can telecommute, suggesting some hires may come from outstate Michigan or elsewhere.

Previously the agency has said it would create "more than 100 high-paying, high-skill jobs in its first year" of operating the Detroit office. But more recent estimates have placed the headcount between 25 and 50 employees when the office opens July 16, then growing to 100 by mid-2013.

Stevens said the local office, and its local judges, could create a local legal market for patent oppositions as well as for overseas companies.

The judgeships "might make Detroit something of a destination for that body of work, the way D.C. is a destination for it right now," he said. "It also opens a gate for international work to flow more directly into Detroit, since the cost of representation here is generally less than in the D.C. market."